United States Patent and Trademark Office OG Notices: 24 August 2004
All Electronic Copies of Patent Application Records Will Now Be Provided as Certified Copies in Electronic Form The United States Patent and Trademark Office (USPTO) is changing to an electronic format for the electronic certified copies it supplies of 1) U.S. patent applications as filed, and 2) U.S. patent-related file wrappers and contents. Copies of U.S. patent application documents made from the USPTO's Image File Wrapper (IFW) electronic system will be provided entirely in electronic form and will always be provided as certified copies. In addition, certified copies of patent application documents will no longer be bound, regardless of whether produced from IFW or a paper file. For the last two years certified copies of large patent application files produced from the USPTO's electronic systems have been provided only on compact disc, with an attached paper certification statement. Currently, certified copies of patent applications as filed of 400 or more pages and all certified File Wrapper copies produced from IFW are provided on compact disc (CD), both with attached paper certification statements. The $200 fee for a file wrapper and contents was effectively waived and replaced by a $55 fee when the application contents are provided on CD. See Copies of File Contents Available on Compact Disc Partial Waiver of 37 CFR 1.19(b), 1278 Off. Gaz. Patent Office 261 (Jan. 27, 2004). The fee for an application as filed remains $20, as set forth in 37 CFR 1.19(b)(1), even when the copy is provided on compact disc. Effective July 30, 2004, all copies of patent documents purchased under 37 CFR 1.19 and produced from IFW will be provided only as electronic files, with an imaged certification statement included as part of a digitally signed PDF (portable document format) file containing TIFF (tag image file format) images of the document pages. These electronic files may be downloaded from the USPTO website or provided by the USPTO on compact disc. The electronic files are digitally signed by the USPTO for authenticity and integrity, and cannot be undetectably modified. As mentioned above, all copies purchased pursuant to 37 CFR 1.19 and produced from IFW will be produced only as certified copies. Uncertified copies may be downloaded under the USPTO's Public PAIR system. Before submitting electronic certified copies of the application as filed supplied on CD or in another electronic form to intellectual property offices under Article 4 of the Paris Convention for the Protection of Industrial Property applicants should inquire whether that office accepts priority documents in electronic form. Although the USPTO provides a certified copy in electronic form, applicants may print the certified copies to paper if required by the intellectual property office to which it is submitted. The USPTO is actively engaging in discussions with other intellectual property offices for the mutual acceptance of electronic priority documents. Should another intellectual property office not accept a paper or electronic certified copy of a patent application as filed as described in the above paragraph, upon presentation of a notice of non-acceptance by the other office, the USPTO will provide a substitute paper copy with a letter signed by an official of the USPTO addressed to the foreign office indicating that the certified copy of the application as filed is to be accepted under Article 4 of the Paris Convention for the Protection of Industrial Property. Since the USPTO will no longer bind or rivet paper certified copies of patent applications as filed or file wrappers and contents, copies produced by the Office will be identical to copies printed by an applicant from the electronic certified copy. Questions regarding this change in practice should be directed to the Office of Public Records at (703) 308-9743. July 30, 2004 DOUGLAS J. BOURGEOIS Chief Information Officer